• Claiming Active Systems but Distinguishing IPXL

    MasterMine v. Microsoft (Fed. Cir. 2017) On appeal here, the Federal Circuit has reversed a lower court indefiniteness finding — holding that the claims were not improperly simultaneously directed to both an apparatus and a method of using the apparatus.  In my view, the decision here continues the Federal Circuit’s implicit rejection of the Supreme Court’s […]

    Continue Reading ...
  • Pity the Patients if Exclusive Licensing is Undermined

    We’ve learned from experience that just because a theory’s off base doesn’t mean it won’t take root, particularly when it involves patents and medicine. “No Vaccines Before the Next Zika Outbreak?: A Case for IP Preparedness”  by Professor Ana Santos Rutshman, a faculty fellow in Health Law and Intellectual Property at DePaul University, Co-Director of the Global Healthcare Innovation Alliances at Duke University, and consultant to the World Health Organization, previews  her upcoming UCLA law…

    Continue Reading ...
  • Pity the Patients if Exclusive Licensing is Undermined

    We’ve learned from experience that just because a theory’s off base doesn’t mean it won’t take root, particularly when it involves patents and medicine. “No Vaccines Before the Next Zika Outbreak?: A Case for IP Preparedness”  by Professor Ana Santos Rutshman, a faculty fellow in Health Law and Intellectual Property at DePaul University, Co-Director of the Global Healthcare Innovation Alliances at Duke University, and consultant to the World Health Organization, previews  her upcoming UCLA law…

    Continue Reading ...
  • Using Experts to Prove Software Copyright Infringement

    [UPDATE: It turns out that my initial thoughts mirrored EA’s here, and that Antonick filed a reply brief. It’s interesting enough that I took a closer look at the initial briefing (and at the District Court), and I’ve updated/edited my post below.]

    I ran across an interesting cert. petition today that I thought I would share and discuss. The case is Antonick v. Electronic Arts, 841 F.3d 1062 (2016), and the petition (filed by David Nimmer, Peter Menell, and Kevin Green) is here. The case is interesting because it is about software copyright infringement, a topic near and dear to my heart on which I’ve written and blogged several times.

    It’s also topically relevant, because it is about Madden Football, one of the more popular sports video game franchises (it’s probably the most popular, but I didn’t do a search to find out). Antonick was an author of the original game, dating all the way back to the Apple II (!), but had a license that he would be paid for any derivative works. And so the question was whether his code was incorporated into newer versions of the software published for Sega and Super Nintendo.

    The problem was that nobody could find the all source code for any of the versions to compare, and the graphic displays were not admitted into evidence. There were snippets, drafts, and binary data files. Using these, “Antonick’s expert, Michael Barr, opined that Sega Madden was substantially similar to certain elements of Apple II Madden. In particular, Barr opined that the games had similar formations, plays, play numberings, and player ratings; a similar, disproportionately wide field; a similar eight-point directional system; and similar variable names, including variables that misspelled ‘scrimmage.'” Based on this and other circumstantial evidence, the jury decided for infringement and the plaintiff.

    But the District Court reversed the judgment as a matter of law. The Court ruled that the jury could not decide infringement because it did not have the source code in evidence to compare, and that the expert’s testimony was insufficient to show infringement.

    And here is where the interesting legal issue comes into play: what is the role of expert testimony? I’ll discuss more after the jump, but here’s a teaser: I think the expert can play a role, and while that is the focus of the “legal” issues in this case, I am not sure that’s what’s driving the opinion. In other words, my sense is that the cert. petition’s claim of a circuit split is in law more than it is in practice. That may be enough for a certiorari grant; I tend to think that Antonick got a raw deal here, so if his lawyers can convince the Court to take this case, more power to him. That said, my gut says that, perhaps through no fault of his own other than waiting too long to sue, the plaintiff just didn’t have enough evidence here–and if they did, they couldn’t convince the District or Appellate courts of it.

    We start with the cornerstone case in this area, Arnstein v. Porter. This was a music case, but it sets out a two-step process used in virtually every copyright case. First, determine if there was “actual” copying – did the defendant copy from the plaintiff. Second, determine if there was “illicit” copying – did what was copied constitute so much similarity that the intended audience believes something was wrongfully taken from the plaintiff.

    The first step is generally objective. Experts are used for the analysis, and we consider similarities even in those things that are not copyrightable, like copied facts. We’re only trying to tell whether the defendant copied or created it independently. The second step is subjective, and the court says experts have no place in telling juries what the important parts of the work are.

    The 9th Circuit, where Antonick’s case takes place, has adopted this test generally, though it gives a different name: the extrinsic test, which is objective, and the intrinsic test, which is subjective. There are some other differences, but they are not terribly important for the core dispute here, namely when you can use an expert.

    Using this framework, in Antonick, the 9th Circuit makes clear that “Antonick’s claims rest on the contention that the source code of the Sega Madden games infringed on the source code for Apple II Madden. But, none of the source code was in evidence. The jury therefore could not compare the works to determine substantial similarity.” As the district court put it, “the jury had no evidence of Apple II Madden or Sega Madden as a whole to enable it to make this subjective comparison.”

    Finally, the court ruled that, “our law is clear that expert testimony cannot satisfy a plaintiff’s burden of proof under the intrinsic test, which ‘depend[s] on the response of the ordinary reasonable person.'”

    It is here that the cert. petition cries foul. It argues that the Arnstein v. Porter rule (and the related 9th Circuit rule set in a case about McDonald’s characters) were simple enough to understand for those works, but that it is a real problem to allow juries to try to decipher computer software without expert witness help.

    I agree with the plaintiff’s position; experts should be allowed to explain the code. But in the context of the case, and in the context of law on the books v. law on the ground, I’m having a harder time.  Let’s start with the context of the law on the books. Despite the nominal rule that the 9th Circuit disallows experts, the case law and practice is to the contrary. The famous case of Apple v. Microsoft makes this clear: “Using analytic dissection, and, if necessary, expert testimony, the court must determine whether any of the allegedly similar features are protected by copyright….Having dissected the alleged similarities and considered the range of possible expression, the court must define the scope of the plaintiff’s copyright…and set the appropriate standard for a subjective comparison of the works to determine whether, as a whole, they are sufficiently similar to support a finding of illicit copying.” As Antonick’s reply brief points out, experts were allowed in Oracle v. Google and no one blinked. And nobody objected in this case.

    In other words, expert testimony can and should be used to understand computer software, just as the plaintiffs would have it here. However, once that understanding is set, the jury must decide whether the remaining similarities constitute illicit copying. I have used this methodology in my own cases in Ninth Circuit courts. I have never had a problem getting expert testimony admitted to show copying or aid the fact-finder in understanding the code where there was competent evidence available for comparison. It turns out that Antonick, doesn’t disagree with me. But he argues that this difference between law and practice creates uncertainty and bizarre ways that expert testimony comes in. This is a fair enough point, and may be enough to get the attention of the Supreme Court.

    But that leads us to the context of this case. The expert testified to the jury that the source code was copied and similar. But there was a significant dispute about how the expert could have known that without having the full source code. The district court opinion, which is unpublished, makes it clear: the expert said that a lot of the features were the same, plus the misspelling of the one variable. But they could have created those similarities using their own re-written source code. Indeed, in a clean room, they may have misspelled the “scrimage” from a display screen rather than by copying code. And any source code copied could have been miniscule compared to the remaining software and/or unprotected elements. Further, the court had already examined the two programs and found much unprotectable, such that infringement required virtually identical copying. But the expert could not opine on virtually identical copying. We don’t know any of this because there was, in the eyes of the court, insufficient evidence.

    A couple points on this. First, I’m not saying that this is actually what happened. I wasn’t in the courtroom, and I have not read the exhibits. I’m saying that the trial court thought this, and the appellate court disagreed. Second, note that my skepticism here does not come from an anti-software bias; I’m generally of the view that structure, sequence, and organization of code is protectable (and have said so in my writing). But you have to have some structure, sequence, and organization to show as your copyrighted work, and to compare against. In this case the court said there was neither.

    Thus, there may well be a circuit split where–in practice–the use of experts in helping the jury understand software would make a difference depending on the circuit. But I’m still not sure that’s  this case. I see this case as a failure of evidence case, indeed a best evidence rule type of case that comes out the same way in every circuit. And, in reading the briefing at the district court level, those were some of the primary arguments on each side; the expert issue was a secondary. The court has ruled that where the underlying evidence is unavailable for examination by the jury (or anyone, really), an expert may not simply opine that there was copying. Indeed, the Ninth Circuit makes this clear: right after discounting the expert testimony, it implies that lay testimony about what the source code looked like might have been useful: “the lay testimony was about how the games appeared, not how they were coded — and Antonick does not assert a copyright interest in Apple II Madden’s audiovisual appearance, only in its coding.” Antonick will surely argue that’s the evidence he, in fact, presented. If so, then he got the short end of the stick on this one. But I believe that if he had the full source code and his expert made the same testimony, the court rules in his favor on identical facts. I’m just not convinced, in practice, that this was an expert issue.

    In short, this is an interesting case. It is a credit to Antonick and his counsel that the case progressed as far as it did. But proving copyright infringement of computer software source code without the actual source code to compare is next to impossible. While the Ninth Circuit is stricter with experts than other circuits, the differences are surmountable…until they aren’t.

    [Update Nov. 6, 2018: The Supreme Court denied cert. a week after I wrote this. The timing is such that I’m certain this had no effect on it, though it’s pretty self-important of me to think that it would have]

    Continue Reading ...
  • Patent-Based Financings: Unlocking Licensing Revenues While Mitigating IP Monetization Risks

    Patent monetization has become nearly impossible for middle-market technology companies without engaging in some level of legal action. Management teams have consequently shied away from pursuing licensing opportunities, even when the revenue potential of a company’s intellectual property is compelling. While traditional debt and equity investors have an aversion to patent monetization stories, there are specialized investors willing to underwrite capital raises aimed at financing licensing…

    Continue Reading ...
  • Merck Sharp & Dohme Corp. v. Hospira, Inc. (Fed. Cir. 2017)

    By Kevin E. Noonan — The Federal Circuit continues its explication of the law of obviousness post-KSR Int’l. v. Teleflex Inc. (and Judge Pauline Newman continues to disagree with her brethren in some regards) in a decision handed down last Friday, in Merck Sharp & Dohme Corp. v. Hospira, Inc. The case arose in an ANDA litigation between innovator Merck and generic drug manufacturer Hospira over the antibiotic ertapenem, sold by Merck under the brand name Invanz®. The drug, known to be chemically unstable, has the following structure: The molecule’s instability arises from two aspects and from two different chemical…

    Continue Reading ...




    $$ The drive belt could equally be carried directly on the motor shaft. / 駆動ベルトを直接モータ軸に掛けることも可能である。(USP6691849)

    $$ Mounted at the opposite end of the shaft 62 to the cover 64 is a thrust ring ball race 72. / カバー64に対するシャフト62の対抗端部に、スラストリングボールレース72が設けられている。(USP6611139)

    $$ Pulleys 26 fitted to the input shafts 25 transmit the power to the gear boxes 21. / 入力軸25に取り付けられたプーリ26は、力をギアボックス21に伝達する。(USP6332818)

    $$ The shafts 29, 40 can be assembled by relative axial movement. / 軸29,40は、軸方向相対移動で組付けられる。(USP6296462)

    $$ A pilot 80 may be provided on lid 24 to support extension portion 78 and throttle valve shaft 6. / 蓋24には、延長部分78及びスロットルバルブシャフト6を支持するため、パイロット(案内棒)80が設けられている。(USP6288534)


    Continue Reading ...
  • Federal Circuit Reverses Finding of Indefiniteness for Claiming Both an Apparatus and a Method

    MASTERMINE SOFTWARE, INC. v. MICROSOFT CORP.: Oct. 30, 2017. Before Newman, O’Malley, Stoll.   Takeaway: System claims containing functional language are not indefinite for covering both an apparatus and a method if the claims merely use permissible functional language to describe the capabilities of the claimed system. Procedural Posture: Alleged Infringer …

    The post Federal Circuit Reverses Finding of Indefiniteness for Claiming Both an Apparatus and a Method appeared first on CAFC Blog .

    Continue Reading ...
  • Some Recent Papers on Injunctions, Stays in the U.S.

    1.  Steven M. Amundsen has published a paper titled Federal Circuit Decisions Concerning Smartphones Have Created Uncertainty Regarding the Evidence Needed to Prove Irreparable Harm and Establish Entitlement to Injunctive Relief, 42 Rutgers Comp. & Tech. L.J. 232 (2016).  From the introduction:
    In four decisions by the Court of Appeals for the Federal Circuit in two patent cases that Apple filed against Samsung, the court has appeared to flip-flop when describing the evidence needed to prove an essential element for injunctive relief: irreparable harm. A patentee must establish irreparable harm, among other things, to obtain a preliminary or permanent injunction. And to establish irreparable harm, a patentee must demonstrate a sufficiently strong connection-or causal nexus-between the patent infringement and the alleged irreparable harm.

    In its Apple v. Samsung decisions, the Federal Circuit explained that “[s]ales lost to an infringing product cannot irreparably harm a patentee if consumers buy that product for reasons other than the patented feature.”‘ So if “the accused product would sell almost as well without incorporating the patented feature,” the infringement injures the patentee only insubstantially even if the accused product’s sales cause substantial damage commercially.’ Thus, the causal-nexus requirement (1) ensures that the infringement causes the irreparable harm “in the first place”‘ and (2) prevents the patentee from “leverag[ing] its patent for competitive gain beyond that which the inventive contribution and value of the patent warrant.”

    This article discusses the causal-nexus requirement’s evolution at the Federal Circuit based on two cases initially filed in April 2011 and February 2012. This article also discusses how various trial courts have applied the causal-nexus requirement when considering the propriety of injunctive relief. It then discusses points to consider when seeking to show or refute a causal nexus.

    The most recent Federal Circuit decision in this series is currently awaiting a cert. decision from the U.S. Supreme Court.  For discussion, see, e.g., this post and this post by Florian Mueller on FOSS Patents. 
    2.  J. Gregory Sidak has published a paper titled Irreparable Harm from Patent Infringement, 2 Criterion J. on Innov. 1 (2017).  Here is a link to the paper, and here is the abstract:
    The Patent Act empowers a court to issue an injunction “to prevent the violation of any right secured by patent.” Whether a court will permanently enjoin an infringer depends on whether (1) the patent holder would suffer irreparable harm otherwise, (2) its legal remedies are inadequate, (3) the balance of hardships favors the patent holder, and (4) the injunction would not disserve the public interest. Similar factors inform the grant of a preliminary injunction. The Federal Circuit often says that the harm from patent infringement is irreparable if it cannot be measured. I say that such harm is irreparable because it irreversibly destroys wealth.

    Patent infringement irreversibly obliterates wealth when it impedes society’s technical progress. Patent infringement does more than transfer wealth involuntarily from the patent holder to the infringer; it also harms third parties by devastating the surplus that consumers would derive from using the product practicing the new technology. Damages are impotent to cure that harm to the public interest. A court’s order of damages can no more recreate the wealth that has been or will be destroyed by an act of patent infringement than it can restore an ancient redwood after the axeman has felled it.

    3.   Jonathan Stroud has published a paper titled NFC Technology LLC v. HTC America, Inc.:  Judge Bryson’s Sitting-by-Designation Guide to Securing Stays in Light of Inter Partes Review, 65 Am. U. L. Rev. 1075 (2016).  Here is a link to the paper, and here is the abstract:

    Federal Article III judges may stay civil litigation. Stays are most appropriate where another court or authority may resolve a part of or the entire dispute. Some statutes guide the courts on when to stay; some case law and appellate precedent guide judges on when a stay is appropriate. But the interlocutory nature of such decisions makes precedential decisions scarce. The Patent Trial and Appeal Board (PTAB), an administrative body tasked with patent post-grant review, efficiently reviews patentability of and can estopp later validity arguments. Stays in light of these proceedings are particularly favored. Although it will be some time before a body of appellate precedent develops surrounding these stays, one senior appellate judge from the patent-focused U.S. Court of Appeals for the Federal Circuit, sitting by designation, has issued a district court decision in a contentious district, where he exhaustively compiled district court stay cases and offered a guide for other judges faced with determining whether to stay. This Essay analyzes that decision.

    Here is a copy of the decision itself.   

    Continue Reading ...
  • UNCTAD Shows Role As Convenor On Investment In Antimicrobial Resistance

    The United Nations Conference on Trade and Development (UNCTAD) this month gathered a wide range of key stakeholders to have a frank discussion about how to solve rising global resistance to existing antibiotics. While not a negotiation, stakeholders in the expert group opened up and shared perspectives, leading to some informal conclusions. Among them: more public and private investment, and a shift in the R&D system to new-style incentives, are needed.

    Continue Reading ...
  • Facebook drops efficient infringement clause from its React software license

    In late September, an official blog post published by Menlo Park, CA-based social media giant Facebook (NASDAQ:FB) and penned by Adam Wolff, the company’s engineering director, announced that the company would be adopting a software license agreement known as the MIT License for many of the company’s open source projects. This includes Facebook’s React platform, a Javascript library for building front-end user interfaces on hardware products. The use of the MIT License moves Facebook away from…

    Continue Reading ...